How to deal with unauthorized use of trademarks online


Unauthorized use of a trademark on the Internet occurs often and in many forms, usually involving the profit, intentionally or unintentionally, of the goodwill associated with a trademark owned by someone else. Such use, however, does not always reach the level of trademark infringement. Unauthorized use of a trademark constitutes infringement only if the particular use is likely to cause confusion among consumers. The most common type of confusion is confusion as to source, which occurs at the time of purchase, but confusion can also arise as to affiliation, connection, or sponsorship, and the confusion need not necessarily arise. produce at the time of purchase.

Counterfeiting can also be based on confusion that creates an initial customer interest, even if the confusion is cleared up at the time of purchase. This so-called confusion of initial interest is a doctrine of trademark law that is designed to combat unauthorized use of a trademark in a way that captures the consumer’s attention, even if no sale is made. is finally concluded following an initial confusion, and the courts have concluded the doctrine particularly applicable to the Internet. Examples of unauthorized use of online trademarks that may constitute infringement include cybersquatting; trademarks in advertising copy, keywords, hashtags and metatags; and fake usernames on social media platforms.

Cybersquatting

To better understand the different types of cybersquatting, it is important to define the different parts of a web address:

Cybersquatting comes in four distinct types: domain squat, combo squat, typo squat, and doppelganger domains. Domain squatting is the registration of new domain names that are identical or similar to the point of confusing a company’s existing brands. Combo squatting is the registration of new domain names created by adding words to already registered domain names. Typo squatting is the registration of new domain names with transposed letters or common misspellings of already registered domain names. Finally, a doppelganger domain is the registration of a new domain name that omits the dot between the subdomain and the second level domain. Besides the domain name itself, there is debate as to whether the use of a mark in a subdirectory also violates trademark law, with some courts finding that a consumer viewing the subdirectory of a URL would likely experience initial confusion of interest, while other courts have held that the appearance of another company’s trademark in the subdirectory does not imply sponsorship or endorsement.

Cyber ​​squatting can also involve domain name parking, which occurs when a registrant registers their domain names with a registrar or parking service provider, which then creates registrations. placeholder pages and invites internet ad networks to fill them with ads instead of building a functional website. This then generates money for the registrant when web users click on links to other websites advertised on the parked page.

Unauthorized Use of Trademarks in Online Advertising and Social Media

Online infringement also occurs through the unauthorized use of trademarks in advertising copy, keywords, hashtags and as fake usernames on social media platforms. In the early days of the Internet, this type of violation also occurred with metatags, which are lists of words used by search engines to index and identify content on a website. But modern search engine algorithms are no longer based on metatags, and the courts have recognized that metatags are obsolete when it comes to search engine indexing.

Google, Facebook, and Twitter together make up over half of the U.S. digital advertising market and are a natural target for any business’s enforcement efforts. Every business has trademark policies prohibiting trademark infringement and provides various mechanisms for businesses to report potential trademark violations. Google and Twitter also offer keywords for use in conjunction with their online advertisements, and courts have held that keyword advertising combined with the use of trademarks in other contexts, such as domain names or the text or placement of the advertisement, may cause confusion. Facebook and Twitter can also be used for the unauthorized registration of usernames or account names that include or include a company’s branding, a practice known as brandjacking. These unauthorized usernames can then be used to spread false information about a company, redirect the public to other companies or products, obtain confidential information, or simply prevent the brand owner from using them as account names. logical for marketing purposes.

Hashtags are widely used on social media platforms to identify or facilitate keyword research or promote goods and services. But whether the use of another’s mark with a hashtag can create a likelihood of confusion and constitute trademark infringement is an open question and the case law to date has been contradictory.

Responding to trademark infringement online

There are a variety of options for tackling online offenses. When the infringement involves domain names, companies can use laws such as the Consumer Protection Against Cyber ​​Squatting Act or alternative dispute resolution such as the Uniform Domain Name Dispute Resolution Policy. ‘ICANN. Where the infringement involves online advertising or unauthorized use of the mark on social media, the mark policies of the respective platforms may be used to report any suspected violation of the mark. Finally, there is always the possibility of filing a complaint in federal court for trademark infringement. The particular approach to enforcement should be based on the facts and the strengths and weaknesses of the various enforcement mechanisms. A downside of the Consumer Protection Against Cyber ​​Squatting Act is that it does not prevent fair use of trademarks or any use protected by the First Amendment. For example, review or rebuke sites, also known as “sucks” sites because they often take the form of “brandXsucks.com”, are likely protected by the First Amendment. But the law can provide a starting point for brand owners to fight against the parking of domain names, as in the case of parked domain names squatted typo or combo squatted.

For keyword offenses, brand owners often need to monitor the use of their own brands. Some companies even resort to purchasing their own branded terms as keywords, as a cost-effective strategy to prevent keyword-related trademark infringement. Unfortunately, competitors anticipate this reaction and sometimes use a search engine’s keyword bidding system to force a business to pay more than it normally would for keywords. For hashtag-related counterfeits, brand owners should consider that if their brands are used as a hashtag and the use is not commercial, then a court may consider the unauthorized use to be fair use.

Allen Loayza contributed to this article.

© 1994-2022 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, PC All rights reserved.National Law Review, Volume XII, Number 4

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